Despite what you may think of Garland, it is notoriously difficult to get a sense of exactly what kind of Supreme Court judge Garland would be based on his past experience. In fact, history teaches us that predicting the judicial philosophy of appointees has vexed President after President, although Republican Presidents have probably faired worse in their appointment predictions than Democrats. Nevertheless, even when a nominee has prior judicial experience, when elevated to the Supreme Court and ultimately able to make the law rather than being required to follow the law, it is difficult to know how any Justice will vote.

Of course, that won’t stop us from trying to read the tea leaves at least a little.

Merrick Garland Deference

The first thing to observe is that there is very little, if anything, on the record about Garland’s view towards intellectual property and patents, which is a topic he will have to contend with should he be elevated to serve on the nation’s highest court. Increasingly over the last decade the Supreme Court has taken patent cases, and this term there are two important patent cases that will be decided. Numerous petitions for writs of certiorari in important cases continue to be filed, so if Garland is confirmed he will be a relative unknown when it comes to intellectual property generally and patents specifically.

Having said this, there is one very concerning aspect of Merrick Garland’s judicial resume that shines a spotlight on what many in the patent community will view as an unacceptable judicial philosophy. It seems that Garland has throughout his judicial career sided incredibly often with government agencies in the cases he has decided, which given all that is going on at the United States Patent and Trademark Office should be concerning to patent owners.

Deference to the federal government and its regulatory agencies seems to be a common theme throughout Garland’s tenure as a Judge. He often sided with the federal government when it was represented in cases involving the individual rights of detainees at Guantanamo Bay. A decision handed down last July in Wagner v. Federal Election Commission (FEC) featured a majority opinion penned by Garland upholding a Congressional ban on federal campaign contributions on individuals or firms currently under a federal contract. A per curiam decision released December 2013 in Judicial Watch v. Department of Defense and Central Intelligence Agency by a judicial panel including Garland upheld the classification of images of Osama Bin Laden taken post-mortem. Last December, Garland wrote the majority opinion in USA v. Nathaniel Law, which upheld the resentencing of three appellants who were charged with trafficking cocaine, crack cocaine and heroin. Time and again, it would appear that Garland isn’t interested in pursuing political ideology so much as he is interested in siding with the views of the government presented in the case.

At a time when many believe the United States Patent and Trademark Office has run amok, deference to the agency seems not to be in the best interest of the industry. Indeed, Cuozzo Speed Technologies v. Lee will be decided this term by the Supreme Court and will require the Court to determine if the Office is employing the proper claim construction standard for inter partes review (IPR). A brief filed by USTPO Director Michelle Lee supports the patent office’s rulemaking authority delegated by the America Invents Act of 2011, but how far does that authority go, and would a Justice Garland simply defer to the agency as he has done so many times in the past?

Just last week the Federal Circuit denied a petition for writ of mandamus filed by a technology company that has had a series of covered business method (CBM) challenges filed against a graphical user interface patent despite the legislative history being as clear as can be that GUIs are not considered covered business methods. Despite extremely compelling evidence that a covered business method review was instituted against a patent that is not a business method the Federal Circuit does not step in, and that same judicial philosophy of extreme deference to the agency seems to run throughout Garland’s previous majority opinions and dissents. This should be raise red flags for patent owners.

Given the fact that the IPR and CBM processes at PTAB have been worrisome (to say the least) for patent owners, the possibility that Merrick Garland would continue his longstanding deference towards federal agencies should cause at least some concern and lead to serious questions if and when he ever does receive a confirmation hearing. Confirming a Supreme Court Justice likely to rubber stamp USPTO decisions would be a terrible mistake and only further erode already tattered patent property rights held by patent owners.

Conclusion

A non-partisan selection for the Scalia opening on the Supreme Court is understandably welcome to many on either side of the political aisle. However, a review of Merrick Garland’s record does suggest that he has a predisposition toward siding with agencies specifically and with the government more generally. It would seem logical to assume that this judicial predisposition would manifest with Garland giving deference to the legal positions held by the U.S. Patent and Trademark Office.

The Author

Gene Quinn
is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. Gene is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Steve Brachmann
is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

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Discuss this

There are currently 2 Comments comments.

A Rational PersonMarch 22, 2016 10:30 am

Gene,

Thanks for the analysis of Judge Garland’s decisions relating to administrative law. His pro-agency bias is not too surprising given his background as a lawyer in the justice.

Also, make sure to check out the concurring opinion by Senior Circuit Judge Williams in Alpharma v. Leavitt. Williams’ concurring opinion, not only shows a better grasp of science and technology than any recent Supreme Court decision and many recent Federal Circuit decisions, but also shows the type of skepticism with respect to an agency’s “explanation” for its actions that I think you and I would like to see in a Supreme Court justice or Federal Circuit judge deciding a patent case.

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